T

Tacking
A legal technicality that allows a trademark owner to make slight alterations in a trademark, without abandoning ownership the original trademark.  Changes in a trademark are often desirable to keep pace with advertising trends & societal changes.  Normally when the use of a trademark ceases, the owner of that trademark legally forfeits or abandons all rights in the mark.  However, if a mark is properly tacked, the trademark owner can claim that the priority date of the earlier mark serves as the priority date of the latter mark, thereby avoiding the abandonment problem.

In order to tack properly, the two trademarks must create the same, continuing commercial impression, and the later mark should not materially differ from or alter the character of the mark attempted to be tacked.  This standard is deemed considerably higher than the likelihood of confusion standard, which determines whether infringement occurs.

Examples of marks that have been denied tacking rights on the basis of being too dissimilar are  DCI with dci;  PRO-CUTS with PRO-KUT;  CLOTHES THAT WORK with CLOTHES THAT WORK FOR THE WORK YOU DO;  EGO with ALTER EGO; and POLO with MARCO POLO.

Tarnishment in dilution law
Under trademark dilution law, a mark may become tarnished when it is "linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context."  The concern over tarnishment is that the public may begin to associate the original mark with the degraded quality or prestige depicted by the imitation.  If so, the value of the mark may be compromised, because the trademark owner cannot control consumer perceptions about the mark.

There need not be any confusion as to source in order for a potential lawsuit to arise out of tarnishment of another company's mark. For example, depictions of the Pillsbury Doughboy and Doughgirl in lewd positions was held to be tarnishment, even though there was no finding of confusion.  Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. 124 (N.D. Ga. 1981).

Telephone numbers, protection of
As long as a telephone number meets the requirements of a trademark, namely that consumers can rely upon it to distinguish the trademark owner's goods or services from those of competitors, then it can receive all the protections provided by trademark and dilution law. Typically, protection for phone numbers is sought for those numbers that are converted to a meaningful word, such as in the case of "Dial L-A-W-Y-E-R-S" in which a court enjoined another company's use of the same phrase, even though the defendant used that number outside of the region in which the original L-A-W-Y-E-R-S phone number was originally secured. See Murrin v. Midco Communications Inc., 726 F. Supp. 1195 (Minn. 1989).

Temporary injunction
This is an order from a court to prohibit or enforce certain conduct on a temporary basis until the court can make a determination based on all the facts and law of the case. The most common example of an injunction in trademark law is a court order to stop using a particular trademark. Since injunctive relief is an equitable remedy, the court will weigh the harm to the defendant if the injunction is imposed against the harm to the plaintiff if no injunction is ordered. The court will also require a bond to compensate the defendant in the event the injunction was wrongly ordered.

Text Marks (lingual marks)
These are trademarks that consist of either words or phrases.  They are the most widely used type of trademark. Depending on the meaning of the particular word or phrase, the mark may have more or less legal strength.

^TM symbol 4.13
The ^TM symbol is used next to a trademark.  It provides notice to the world that a trademark owner claims trademark rights in that mark. Companies can use the ^TM symbol on any mark which serves to identify that company's goods, and the ^SM symbol on any mark which serves to identify that company's services. There is no need to have a federal or state registration prior to using the ^{TM or SM} symbols. However, use of the © symbol requires a federal registration.

Token Use
This term refers to uses of a trademark that are purely for the purpose of securing rights in a that mark, as opposed to any true interest in or expectation of making commercial sales. A manufacturer may, for example, sporadically ship a few boxes bearing the mark, but does so with no particular intention that the mark will become associated with the source of the goods. 

If a mark becomes challenged on the grounds of abandonment, the trademark owner will need to prove use in commerce, and token uses will not suffice. Such token uses were more common prior to the 1988 revision of the Trademark Act in which the Intent to Use procedure was added.  The Intent to Use application eliminated the need to secure an early priority date in a mark without actually using it. However, token uses are still continue in an effort by some to avoid the result of abandonment.

Top level domain name
A top level domain (tld) is that portion of a domain name that comes after the second level domain, such as com, org, net, uk, ca, etc. For example, in Pliam Law Group, P.A.'s URL, http://www.pliam.com, "pliam.com" is the domain name, "pliam" is the second level domain, and "com" is the top level domain. 

The US Patent and Trademark Office (USPTO) has published a memorandum stating that it is unnecessary to include the top level domain when seeking federal registration of domain names. However, at least one trademark legal scholar has suggested that for maximum protection, a company may wish to do so anyway, since the USPTO has been known to be wrong before, and a court has not yet decided this issue. In fact, if you search for ".com" in the federal trademark database, it is clear that not everyone is relying upon the advice of the USPTO (after all, it is not the USPTO's job to advise on any matter other than the requirements of registration). 

It is important to note that if you chose to apply for a trademark using with the top level domain, your registration may only apply to infringements of the entire domain, and not merely for infringement of the second level domain. Thus, if you intend to register the ".com" portion of a domain, it is advisable that you also file a separate application for the second level domain alone.

Trade dress (Product design)
Trade dress consists of the overall image of a product and may include features such as size, shape, color or color combinations, texture, graphics, etc.  Trade dress may even include the displays attending goods, and the decor or environment in which a service is provided.  As long as the particular feature in question meets the requirements of distinctiveness in trademark law, that feature receives protection. 

Only those elements designed specifically to distinguish the product are protected;  not the functional features of trade dress that have a utilitarian purpose. See functionality doctrine for more information on this subject.

Trade name
Also known as a "corporate name," "assumed name," or "business name," a trade name is the name under which a company conducts its business.  Whereas a trade name identifies the business itself, trademarks identify the goods or services sold by the business.  Also, while a corporate name specifically identifies the name of a corporation, a business name, trade name or assumed name can refer to entities that are not corporations.

Trade names frequently receive protection as trademarks, because they often meet the trademark law requirements of use in commerce, distinctiveness, and unobjectionable content.  However, unlike a trademark, trade names can obtain protection under the Trademark Act and common law of unfair competition, even if they are not used in direct connection with the sale of goods or services.

A frequent misunderstanding occurs when registering or reserving trade names with the appropriate state governmental agency, e.g. the Secretary of State.  In so doing, businesses are often led to believe they have acquired trademark protection.  This is not so.  States require the registration of trade names when doing business under a name other than a legal name, in order that the true identity of a company/person can be found.  A state will register or reserve a trade name as long as it is not identical (or near-identical) to a name already registered.  By contrast, a trademark that is far less similar to an existing trademark than "near-identical" can infringe a prior mark.

Trademark
A trademark can be any "thing," such as a word, name, symbol, sound, color, packaging scheme or other device, or any combination thereof, as long as that "thing" is used to identify goods or services of one company and distinguish them from the goods or services of another.  Thus a trademark is a source-identifyer, and communicates to consumers that all products bearing a particular mark are from the same source.   Consumers need not know the exact manufacturer or service provider, but must believe the goods or services bearing the mark are not from the same source as those bearing a different mark.  For example, BETTY CROCKER receives trademark protection, even if nobody knew that the source of Betty Crocker products was actually General Mills, Inc., the company that owns the BETTY CROCKER trademark.

In order to qualify as a trademark, the mark must not be forbidden, must be distinctive, and must be used in commerce.  In a nutshell, the mark cannot consist of objectionable material, must be recognizable as a brand, and must have an effect upon sales.  For federal registration, those sales must be interstate sales.  

Trademarks are often confused with trade names, which can be, but are not necessarily, trademarks.  Service marks, collective marks and certification marks are also distinguishable from trademarks.  However, it is not uncommon for the word "trademark" to refer to all such marks.  Finally, when used in some contexts, the word "trademark" refers specifically to a mark used to sell goods, as opposed to a service mark, which is a mark used to sell services. 

Trademark Act (Lanham Act)
The Trademark Act of 1946 is a federal statute governing registration and maintenance of trademarks, and provides multiple causes of action.  See 15 U.S.C. §§ 1051 et seq.  Included in the Act are claims for trademark infringement, trademark dilution, unfair competition, counterfeiting, and more recently, for cybersquatting and reverse domain name hijacking.

Trademark Causes of Action
When there is a conflict between marks, there are several types of lawsuits which could be brought.  These include trademark infringement in violation of section 32 of the Lanham Act, 15 U.S.C. § 1114; False designation of origins or false descriptions in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); Trademark dilution in violation of section 43(c) of the Lanham Act, 15 U.S.C. §1125(c); Violation of state trademark infringement statutes;  Common law trademark infringement; Violation of state unfair competition and deceptive practices statutes; Common law unfair competition; and Common law or state statutory violations of the right of publicity.

Trademark Law Treaty
The Trademark Law Treaty became effective in August of 1996.  The treaty attempts to harmonize procedures for trademark applications, assignments, renewals across member countries, and places limitations on the requirements that a member country can impose.

Trademark Misuse
A theoretical cause of action in which one claims that a trademark owner has used its trademark registration to unfairly promote its monopoly trademark rights.  Although purely speculative at this point, some legal scholars have suggested that the owner of a trademark registration should lose their trademark registration if they engage in abusive tactics that violate the boundaries of fair competition. (See article). This doctrine was already applied successfully with respect to patents and copyrights, and thus has some precedential merit. 

The trademark misuse theory was proposed most recently to address abuses occurring as a result of Network Solutions' earlier dispute resolution policy, which placed domain names on hold whenever a trademark owner with a federal registration went through the minimal procedural steps required to invoke the hold. Since Network Solutions' old dispute policy did not require proving infringement or even any likelihood of infringement, the old policy gave the trademark owner substantial leverage in negations to acquire a domain name.  Proponents of the trademark misuse theory claimed that unless the trademark owner had a good faith believe that the domain name was infringing their trademark, invoking the hold policy was a misuse of their trademark registration.  As such, the domain name owner should have a right under the misuse theory to have the court order cancellation of the trademark owner's trademark registration.  

Abuses by some trademark owners of the earlier dispute policy was one of the reasons that Network Solutions was forced by ICANN to adopt a new dispute policy.  Even though the old hold policy is no longer effective, the trademark misuse theory may still prove useful where a domain name owner is coerced into litigation or arbitration over a frivolous claim of infringement. 

Trademark Trial and Appeal Board (TTAB)
An administrative hearing body under the auspices of the U.S. Patent and Trademark Office. The TTAB hears matters concerning federal registration of a mark and the cancellation of federal registrations. Primarily, the TTAB hears appeals from final refusals issued by a Trademark Examining Attorney.  

Decisions by the TTAB can be reconsidered by the Board if a request is filed within one month after the decision.  Appeals thereafter can be brought to the Federal Circuit Court of Appeals or to federal district court.

Trademark attorneys do not need a special license or certification to practice in front of the TTAB, as is required when practicing patent law in front of the USPTO.

Trafficking
Trafficking means to transport, transfer or otherwise dispose of goods.  Trafficking or attempted trafficking is a crime if the person engaged in such activity had knowledge that the goods were marked with counterfeit trademarks.  See 18 U.S.C. § 2320.

Transferee
The party who acquires trademark rights in an assignment or transfer of a trademark.

Transfer of ownership (assignment)
An assignment is the legal transfer of ownership of any property such as a trademark or copyright from one owner to another.  The transferee or "assignee" is the person who acquires ownership, and the transferor or "assignor" is the person who transfers ownership rights. 

Great care should be taken when drafting an assignment document and implementing its transfer.  To be valid, a trademark assignment must include the transfer of goodwill accrued in the assigned mark beyond mere assignment of the mark itself. Traditionally, courts have required the transfer of tangible assets along with the trademark.  More recently, however, some courts have taken a more liberal view of assignments, and do not require the transfer of such tangible assets. Nonetheless, the assignee must continue to sell goods or services of the same quality and nature as the assignor to ensure that goodwill has indeed passed with the mark. See PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969). 

You will also want include in the transfer document the assignment of the right to sue for past infringements.  Also consider including a statement about the geographical region for which rights are assigned, the physical transfer of materials establishing the trademark right, and the reasonable cooperation of the assignor, if needed to prove establishment of the trademark. 

When a registered trademark is assigned, it is a good idea to record the assignment immediately with the U.S. Patent and Trademark Office, although such recordation is not mandatory.

Transferor
The party in a trademark transfer transaction (assignment) who conveys ownership rights in a trademark to the assignee/transferee.

Treaties
A treaty is an agreement between nations. There are several treaties addressing trademark rights.  

Some treaties attempt to harmonize the laws between countries, while others set up a centralized trademark registration filing system.  The usefulness of a treaty depends in part on whether the treaty invokes national treatment or reciprocal rights.

One of the most important treaty rights for new trademark registrants is reciprocal filing rights.  This right allows US trademark registrants to receive the priority in other countries of their trademark registration date in the US if they file for registration in the member country within a six month period following filing in the US.   

Treble damages 16.4
Treble damages means three times (3x) the amount of provable  damages. The Trademark Act authorizes courts to exercise their own discretion in awarding treble damages, and his award is usually reserved for willful violations of the Act. However, any increases over provable, actual damages have to be for the purpose of compensation, and not designed as a penalty.

TRIPs Agreement
Otherwise known as the Trade-Related aspects of Intellectual Property, TRIPs is a new agreement within the GATT that addresses intellectual property concerns. TRIPs marks the first serious involvement of the GATT into intellectual property issues. Because of TRIPs, the Trademark Act (section 2(a) of the Lanham Act) was amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

Types of marks
While the term "service mark" refers to marks used in selling services, "trademark" can be used to refer either to marks selling goods, or as a general word meaning any kind of source identification symbol, such as a certification mark, collective mark, service mark or trademark.

Certification marks are used to signify a certain level of quality, or that specific standards have been met, while Collective marks are used to identify associations of companies or organizations. 

Any mark, whether a service mark, trademark, collective mark,  or certification mark, can be made up of a symbol, word, phrase, smell, sound, or even packaging design.  The only requirement to qualify for use as a trademark is that the "thing" must be used to distinguish its own brand of goods or services from other brands.  

Typewritten drawing
A "drawing" that satisfies the drawing page requirement in a trademark application by simply typing out the letters of the trademark onto the drawing page.  A typewritten drawing can only be used for lingual (text) trademarks, and must consist of all upper-case letters.

If the applicant is claiming stylized features along with the text, then a graphic depiction of the mark, other than a typewritten drawing, is required.